September 23, 2014

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Technology-based companies depend on their intellectual property to protect innovations, but many fail to plan beyond the initial patent filing and leave key intellectual property unprotected.

Some companies put off filing a patent application only to discover the delay prevents them from
obtaining a patent for their invention. Here
are a few tips that every technology-based company should follow to protect its intellectual property.

File early

Entrepreneurs and start-up companies are eager to present their innovations to investors and the marketplace. However, disclosing inventions too early through fund raising, sales activities or marketing may prevent a company from obtaining a valid patent. In the United States, an inventor has only one year from the first offer of sale or public use of an invention to file a patent application.

Know who owns what

Many companies assume that because they hired an employee, contractor or consultant to develop or improve a product, that work belongs to the company. However, unless an agreement is in place regarding ownership of the intellectual property, that employee, designer or consultant may own the patents and copyrights. Employee agreements should clearly explain the employee's obligations to the company regarding intellectual property, including obligations to cooperate with the company, even after termination. Similarly, agreements with contractors can reduce misun
derstandings and the risk of costly ownership disputes later.

Protect your trade secrets

Some innovations or other confidential information may not be entitled to or best suited for patent protection, but if they are not made public, they may be protectable trade secrets. Common trade secrets include product designs, manufacturing processes, costs and even customer information. The key to trade secret protection is secrecy. To that end, companies need confidentiality agreements with vendors, consultants and employees. Companies also should limit the distribution of confidential information.

Continuously evaluate

Many companies cross intellectual property protection off the to-do list after a patent application has been filed. Frequently, there are product design changes and improvements after a patent application has been filed. These changes and improvements may be protectable. If a product design changes too much, the initial patent application will not protect the new design. The company may need to file a new patent application to cover the improved design.

Understand what is protectable.

Just because an innovation is protected by one area of intellectual property doesn't mean it isn't protectable by another area that provides different, possibly stronger, protection. As technology evolves, the definition of what is protectable also evolves. For example, inventive methods of doing business are now protectable by patents. For some time now, software has been protectable by copyright and patent law.

Document R&D efforts

Inventors need to document research and development efforts so they can later prove when an invention was conceived. Documentation also can establish due diligence from the date of conception. If an inventor was the first to conceive of an invention and diligently worked to reduce it to practice, then that inventor will be credited with the invention even if the person was not the first to file the patent application in the United States. The failure to document may mean the loss of patent rights.

Disclose prior products

The company and the inventor must disclose to the patent office what they know about similar inventions.

This duty to disclose includes informing the patent office of known products and processes that existed before their invention. This duty exists from the time a patent application is filed until a patent is granted.

Failure to make such disclosures during the pendency of the application may render the patent unenforceable.

Additionally, the more prior information disclosed to the patent office, the stronger the patent will be when it is time to enforce it against potential infringers.

Tinsley is a partner at Indianapolis law firm Baker & Daniels LLP and represents clients on intellectual property matters. Norman J. Hedges, also a Baker & Daniels attorney, contributed to this column.Views expressed here are the writers'.

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